Ducky Ltd. v. Iviliia Millionic IT Sp. z o.o.

CourtDistrict Court, N.D. California
DecidedJune 4, 2025
Docket3:24-cv-02268
StatusUnknown

This text of Ducky Ltd. v. Iviliia Millionic IT Sp. z o.o. (Ducky Ltd. v. Iviliia Millionic IT Sp. z o.o.) is published on Counsel Stack Legal Research, covering District Court, N.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Ducky Ltd. v. Iviliia Millionic IT Sp. z o.o., (N.D. Cal. 2025).

Opinion

1 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 NORTHERN DISTRICT OF CALIFORNIA 8 SAN FRANCISCO DIVISION 9 10 DUCKY LTD., Case No. 24-cv-02268-PHK

11 Plaintiff, ORDER GRANTING MOTION SEEKING REFERENCE OF 12 v. QUESTIONS TO THE U.S. COPYRIGHT OFFICE (17 U.S.C. 13 IVILIIA MILLIONIC IT SP. Z O.O., § 411(B)(2)) 14 Defendant. Re: Dkt. No. 37

15 This is a copyright case. Now before the Court is Plaintiff Ducky, LTD’s (“Ducky”) ex 16 parte motion seeking an Order from this Court referring certain questions to be sent to the U.S. 17 Copyright Office pursuant to 17 U.S.C. § 411(b)(2). [Dkt. 37]. Ducky has not requested oral 18 argument on this motion, and the Court finds this dispute appropriate for resolution without oral 19 argument. Civil L. R. 7-1(b). After carefully considering the submissions and applicable legal 20 standards, the Court GRANTS Plaintiff Ducky’s ex parte motion [Dkt. 37]. 21 BACKGROUND 22 The following facts are either uncontested or, if contested, viewed in the light most favorable 23 to Defendant Iviliia, the non-moving party. Plaintiff Ducky is a “Cyprus-formed limited company 24 with its principal place of business in Limassol, Cyprus.” [Dkt. 1 at 3]. Plaintiff Ducky avers it 25 “owns all rights and interests to the mobile application game, Melon Sandbox (the ‘Game’), 26 including all copyrights to the Game and all copyrights to the underlying artwork and other elements 27 of the Game.” [Dkt. 1 at 2]. Plaintiff Ducky avers that “[s]ince its release, the Game has been 1 on the Apple App Store.” Id. at 6. 2 “Defendant Iviliia [] is a Polish private limited liability company” with its principal place of 3 business in Warsaw, Poland. [Dkt. 1 at 3; Dkt. 13 at 6]. Plaintiff Ducky alleges that Defendant 4 Iviliia fraudulently registered copyrights to the Game and “used these fraudulently obtained 5 copyright registrations to extort settlement payments and licensing fees from third parties who had 6 published derivative works based on the Game.” Id. at 2. Defendant Iviliia has submitted a 7 copyright violation notice to Google and Apple pursuant to the Digital Millennium Copyright Act 8 (“DMCA”), which Plaintiff Ducky likewise claims to be fraudulent. [Dkt. 1 at 9–10; Dkt. 13 at 93– 9 113]. Plaintiff Ducky further alleges that Defendant Iviliia “sought to fraudulently register 10 trademarks to the Game.” [Dkt. 1 at 2]. 11 Plaintiff Ducky alleges that after contacting Defendant Iviliia regarding the alleged 12 misconduct, Defendant Iviliia “falsely claimed that it was trying to protect Plaintiff’s rights.” Id. at 13 2. After Plaintiff Ducky sought clarification, Defendant Iviliia allegedly ceased communications 14 with Plaintiff Ducky. Id. 15 On April 16, 2024, Plaintiff Ducky filed the instant lawsuit against Defendant Iviliia seeking 16 declaratory relief, including declarations that: (1) Defendant filed fraudulent copyright registrations 17 in the Game; (2) Plaintiff has not committed copyright infringement with regard to Defendant’s 18 allegedly fraudulent copyright registrations; (3) Defendant fraudulently filed trademark registrations 19 in marks relating to the Game; and (4) Plaintiff is the rightful owner of copyrights in the Game (and 20 the characters and artwork in the Game). Id. at 11–12. 21 LEGAL STANDARD 22 Section 411 of the Copyright Act sets forth provisions regarding the filing of inaccurate 23 information in a copyright registration: 24 (1) A certificate of registration satisfies the requirements of this section and section 412, regardless of whether the certificate contains any inaccurate information, 25 unless— (A) the inaccurate information was included on the application for copyright 26 registration with knowledge that it was inaccurate; and 27 (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration. alleged, the court shall request the Register of Copyrights to advise the court 1 whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.” 2 17 U.S.C. § 411(b)(1)–(2). 3 Under this statute, a certificate of copyright registration which contains inaccurate 4 information can therefore be held invalid (i.e., the registration does not satisfy the requirements of 5 §§ 411 and 412 of the Copyright Act) if that inaccurate information was included with knowledge 6 of its inaccuracy and, if the Register of Copyright had known of the inaccuracy, that would have 7 resulted in refusal of the registration. However, “[t]he law is unsettled regarding what evidentiary 8 burden a movant must meet to satisfy the conditions of § 411(b)(1).” Williams v. Hy-Vee, Inc., 661 9 F. Supp. 3d 871, 887 (S.D. Iowa 2023). “Courts of Appeals are split on whether § 411(b)(1)(A)’s 10 ‘knowledge’ element requires indicia of fraud.” Williams, 661 F. Supp. 3d at 887 (citing Roberts v. 11 Gordy, 877 F.3d 1024, 1029 (11th Cir. 2017) (holding § 411(b) “codifies the defense of Fraud on 12 the Copyright Office”); Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, L.L.C., 925 F.3d 1140, 13 1147 (9th Cir. 2019) (reversed on other grounds) (finding § 411(b) “does not require a showing of 14 fraud”)). The Supreme Court has not resolved this precise issue. See Unicolors, Inc. v. H&M 15 Hennes & Mauritz, L. P., 595 U.S. 178, 188 (2022) (acknowledging the Court was not deciding 16 whether invalidation of a copyright registration under § 411(b) required a showing of fraudulent 17 intent). 18 The literal language of Section 411(b) does not use the word “fraud” but rather speaks to 19 “knowledge” of the inaccuracy in the copyright registration sought to be invalidated. The Supreme 20 Court has instructed that, in the context of § 411(b)(1), “the word ‘knowledge’ means actual, 21 subjective awareness of both the facts and the law.” Unicolors, Inc., 595 U.S. at 185. “[W]illful 22 blindness may support a finding of actual knowledge” within the meaning of Section 411(b)(1)(A). 23 Id. “Circumstantial evidence, including the significance of the . . . error, the complexity of the 24 relevant rule, the applicant's experience . . . and other such matters, may also lead a court to find 25 that an applicant was actually aware of, or willfully blind to, legally inaccurate information.” Id. 26 Under Section 411(b)(2), the statutory scheme requires that a court “request the Register of 27 1 registration in question in the first instance, if the inaccuracy of the information had been known at 2 the time. The statutory scheme does not expressly set forth the evidentiary burden on a movant 3 sufficient to warrant a court exercising this authority and referring questions to the Copyright Office. 4 Thus, “courts are free to decide when a sufficient factual record exists such that referral would be 5 fruitful.” Lieb v. Korangy Publ’g, Inc., No. CV 15-0040 (AYS), 2022 WL 1124850, at *12 6 (E.D.N.Y. Apr. 14, 2022) (citing King-Devick Test Inc. v. NYU Langone Hosps., No. 17-CV-9307 7 (JPO), 2019 WL 3071935, at *10 (S.D.N.Y. July 15, 2019)). Courts have the discretion to require 8 a movant to “demonstrate that (1) the registration application included inaccurate information; and 9 (2) the registrant knowingly included the inaccuracy in his submission to the Copyright Office” as 10 a prerequisite for the court’s seeking advice from the Copyright Office under Section 411(b)(2).

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